Published article on World Trademark Review (n.28 December/January 2011)

In Italy, the Civil Code and the Industrial Property Code ensure protection for unregistered marks, as well as other unregistered commercial signs (eg, insignia, business names and company domain names), but such protection is subject to strict conditions and a number of restrictions.
The Civil Code regulates rights deriving from the use of such signs, largely on the basis of the rules on unfair competition. The Industrial Property Code deals with unregistered marks and commercial signs, clarifying that they are industrial property rights (so-called ‘untitled rights’) and may be used against the registration of trademarks. Article 12(1)(b) of the Industrial Property Code states that “marks are not to be considered as new… [if], on the filing date of the application,… [they] are identical or similar to a mark already known as a trademark or distinctive sign of manufactured products or services, placed on the market or given by others for identical or similar products or services, if due to the identical nature of or similarity between the marks and between the products or services a risk of confusion can arise for the public, which can also consist of a risk of association between the two marks… The preceding use of the mark, when it does not involve notoriety thereof, or when the notoriety is merely local, does not detract from the novelty, but the third party having prior use has the right to continue the use of the trademark, even for the purposes of advertising in the local area, notwithstanding the registration of the trademark itself.”
Thus, in Italy, only unregistered trademarks (and other signs) with notoriety, and those whose notoriety is not merely local, can prevent the registration of a subsequent trademark application. This article focuses on unregistered marks and, in particular, on recent case law to determine whether, two years on, the Court of Cassation decision reported in World Trademark Review Issue 16 is still relevant. Ruling on Case 3236, in its decision of March 27 1998, the court stated that “in the scope of the Italian legal code, the local pre-use of the trademark is an entirely marginal reality… Moreover, this is in accordance with the favor legis for registering the trademark, since the entire code is based on registration and is aimed at encouraging the latter.”
In the 2005 reform of the Industrial Property Code, unregistered rights were fully included – under Article 2 – among the industrial property rights regulated by the code. This simple step allowed for preliminary injunctions in cases involving unregistered rights. Until the code came into force, such measures were typically used in respect of registered or patented rights. They include orders for:
• a description of the counterfeit goods;
• a restraining order;
• seizure of the infringing products; or
• disclosure of information held by the opponents.
The change has proved significant. In a decision issued on June 15 2007, in proceedings for a preliminary injunction in the LOREL MISS case, the Court of Florence held that “a previously used unregistered trademark with more than merely local notoriety enjoys the same precautionary protection as a registered trademark under the Industrial Property Code”.
In this case a company, which had used the mark LOREL MISS since 1987 as its business name and unregistered trademark, and since 1998 as a domain name, enforced its rights in respect of the later use of the same trademark by third parties. The holder of the trademark with prior use asked the judges to grant a preliminary injunction for a description of the products sold and to access the accounting documents of a thirdparty counterfeiter.
The court granted the ex parte injunction, confirming that the plaintiff had “shown that it had used the distinctive mark for numerous years and had attained national notoriety”. To this end, the plaintiff had supplied a large number of advertisements from leading fashion magazines.
The ruling is particularly significant because the summary evaluation of evidence in preliminary injunction proceedings is particularly strict. In LOREL MISS the plaintiff was able to provide considerable documentary evidence; nevertheless, such an application is a positive move and a further step along the road to a more complete protection of unregistered rights.
Proof of right is the most difficult obstacle when claiming rights in unregistered marks. Numerous elements must be adequately shown, from the date of first use and continued use of the mark to proof of its notoriety in Italy.
Two recent cases involving the wellknown luggage trademark RONCATO resulted in opposing decisions, largely as a result of the evaluation of evidence of rights. In both cases, EU case law was brought to bear on the debate under Article 8(4) of the Community Trademark Regulation.
The more significant decision was issued by the Court of Venice, acting as a Community Trademark Court. On April 30 2008 it ruled in favour of Roncato Srl, the holder of the unregistered trademark RONCATO for luggage, in a dispute arising from the prior use of the mark, initiated by the holder of a Community trademark for the same mark, which was registered in Class 18.
Valigeria Roncato SpA sought to protect its Community trademark against use of the identical trademark by Roncato, requesting a restraining order to prevent such use.
Roncato contested this, stating that it possessed an unregistered trademark that had been valid in the Italian territory before the date of application of the Community trademark.
After examining the considerable documentation produced by the opponent, the court concluded that the earlier use of Roncato’s unregistered trademark had been not merely local, since such use had even extended outside Italy. Therefore, it considered that the enforced Community trademark was potentially voidable and certainly could not prevail in the case before it.
The parties also met before the Court of Justice of the European Union (TFI T124/09, decision of July 7 2010). Roncato had presented a Community trademark application to the Office for Harmonisation in the Internal Market (OHIM) for Classes 3, 9 and 14. Valigeria Roncato opposed the application on the basis of unregistered trademarks in Italy for products in these classes, and the reputation of its own Class 18 trademark (which had been enforced before the Court of Venice).
OHIM’s Board of Appeal rejected the opposition. The decision was appealed. The court began by correctly affirming that for the purposes of the application of Article 8(4) of the Community Trademark Regulation, the board must consider both the applicable national legislation and the case law in the EU member state in question. Moreover, the opponent must prove that the mark falls within the scope of application of a law of that member state which would allow for prohibition of use of a later trademark.
The court held that the board had acted correctly, stating that “the Board of Appeal was unable to evaluate the level of notoriety of the use of unregistered trademarks for the present products, since the official statement on the turnover and on the advertising and promotional expenses supplied by the plaintiff did not make any distinction between its traditional products and its other products.”
In addition, the court commented on an issue with a significant bearing on Italian law: whether mere notoriety (knowledge) of prior use is sufficient to apply Article 12 of the Industrial Property Code, or whether the mark must have a reputation among the Italian public. The court clarified that the Board of Appeal “did not require that the high degree of notoriety of the unregistered trademark be proven, but only that the knowledge of the trademark by the public be proven, as provided for by the Industrial Property Code.”
While the necessary degree of evidence must be evaluated on a case-by-case basis, the ruling offers helpful indications. The analysis of OHIM’s position at the opposition stage is potentially even more useful to help to determine what may constitute sufficient evidence of nationwide prior use when having to enforce such rights in Italy. An extensive list of evidence produced by an Italian party in a Community trademark opposition case is given below (BIO DOM case (Opposition B 676 025, April 21 2009)). Its intention was to prove its rights in an unregistered trademark against the holder of a Community trademark application. The opponent presented:
• declarations by independent third
parties that the marks were well known in Italy;
• proof that it held 40% of the market share;
• examples of use of the trademarks;
• the annual turnover of goods marketed with the signs, broken down by Italian regions;
• a variety of invoices as examples;
• the Italian Code of Industrial Property and new procedural rules submitted in English and Italian;
• several pages of tables relating to pointof- sale information – such points of sale purportedly being the most renowned in Italy – backed up by an excerpt form;
• a list of the most important buyers’ associations in Italy; and
• references to its participation in renowned international exhibitions related to floriculture and gardening.
OHIM considered such evidence more than sufficient to demonstrate use for all of the earlier rights, and affirmed that the opponent had satisfied the criteria of the Italian Industrial Property Code, “since the invoices prove[d] that the goods covered by the earlier rights were distributed and sold all over Italy, not just in one location”.


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